Unsuccessful opposition by SG Fleet to an application for removal of its trademark registration for NOVALEASE covering finance services for motor vehicle fleets in class 36 alleging non-use during the 3 year period ending on 7 March 2016.

Both parties filed evidence and Telfer also filed written submissions.

The NOVALEASE trade mark was used in the UK by a related company of SG Fleet which asserted an intention to use this mark in Australia to promote novated leases and salary packaging options for consumers. There was some earlier reference to NOVALEASE on SG Fleet’s Australian website in 2012, but the delegate treated this as some sort of error. There were also some references to this trade mark on internal documents, but this evidence was heavily redacted and could not be relied upon as evidence of an ongoing intention to use this mark in Australia or concrete preparations to use this mark in Australia.

The delegate found no reason to exercise discretion and ordered the NOVALEASE trade mark to be removed from the Register.

Pioneer Water Tanks Pty Ltd [2018] ATMO 32 (5 March 2018)

Pioneer’s application for trademark registration of the shape of a storage tank characterised by rib spacing as shown below filed on 18 December 2015 was refused based on lack of distinctiveness.

Pioneer relied upon evidence of use of the supply of water tanks having this wall profile (known as “8-80 V-Lock”) since 2001 which it asserted made its water tanks uniquely different in appearance to others on the market with corrugated walls.

The material revealed during examination indicated that it was common for these types of tanks to have wall profiles consisting of alternating furrows and ridges. The delegate characterised Pioneer’s wall profile as contributing to the strength of the tank and its ability to retain its shape which were functional features. As such, the applied for shape mark was not to any extent inherently adapted to distinguish the relevant goods.

The evidence relied upon by Pioneer pointed to consumers recognising the particular wall profile, but it was not clear that they treated this shape alone as a trade mark in the sense of being a badge of origin. The further difficulty was the use of “ 8-80 V-Lock” in Pioneer’s marketing materials which had the effect of diluting any trade mark significance that may have otherwise been attributed to the claimed shape mark.

Unsuccessful opposition by Energy Beverages to an application for trade mark registration of ‘MADUI Mothers Against Driving Under the Influence” filed on 30 July 2015 for various beverages in classes 5 and 32.

Both parties filed evidence and the opponent relied upon written submissions.

The opponent relied on prior use and registrations of various MOTHER marks which it acquired from the Coca-Cola Company in 2015.

The s44 ground failed because the delegate did not consider the applied for mark to be deceptively similar to any of the opponent’s prior registrations for a family of trade marks containing or consisting of the word MOTHER covering similar goods.

The s60 ground also failed. Although the opponent had demonstrated a substantial Australian reputation through sales and marketing of MOTHER branded energy beverages, particularly since their Australian re-launch in 2008. However, the delegate was not satisfied there would be a likelihood of confusion given the differences in the respective trade marks. The delegate also pointed to the extent of the opponent’s reputation reducing the risk of confusion.

The opponent also relied on the s42(b) ground and argued that use of the applied for mark would be contrary to the Australian Consumer Law in falsely indicating some connection with the opponent or its MOTHER branded energy beverages, but the delegate was not satisfied of this.

The opponent also relied on s59 and contended the applicant did not have an intention to use the applied for mark for the relevant goods, but the delegate construed this as a mere allegation and did not establish a prima facie case which would shift the onus back on the applicant to rebut.

The s62A bad faith ground of opposition also failed. Mere awareness of the opponent’s MOTHER brand was not sufficient to establish bad faith by the applicant in seeking registration of the applied for mark.

Unsuccessful opposition by Mind Your Own Property to an application for removal of its trademark registration for MIND YOUR OWN PROPERTY covering a broad range of real estate, financial and insurance related services in class 36 alleging non-use during the 3 year period ending on 3 May 2016.

Both parties filed evidence and participated at the hearing.

Over 2013 and 2014, the opponent was involved in the preliminary development of software for an online property management system and, in February 2015, sold its IP to Rentify Holdings which further developed this software and released it in Western Australia under the Rentify brand. This software was subsequently withdrawn from the market on 30 September 2016.

The delegate found no use of the MIND YOUR OWN PROPERTY trade mark during the relevant period. The preliminary steps taken by the opponent had not gone beyond investigating and planning to use the mark. There was no evidence of objectively committing to use this trade mark.

There were no obstacles to use of the registered mark and the delegate was not prepared to exercise discretion in favour of the opponent. Consequently, the delegate directed this trade mark to be removed from the Register.

Successful opposition by Southcorp to an application for trademark registration of ABEL TASMAN filed on 15 December 2015 for wines in class 33.

Both parties filed evidence. The applicant filed written submissions.

The opponent had an earlier trademark registration for ABEL’S TEMPEST for wine in class 33. The trade mark had been used since 2009 for a range of wines made from grape varieties sourced from Tasmania. The ABEL’S TEMPEST trade mark was used as a sub-tier of the HEEMSKERK brand. Heemskerk was the name of one of the ships used by Abel Tasman when discovering Tasmania in 1642.

The delegate upheld the s60 reputation ground of opposition and noted “the Opponent has chosen to associate the Opponent’s Trade Mark with the explorer Abel Tasman via the use of his forename, and in its publicity material, and to stress that associative force between its vineyard and winery, Heemskerk (named for one of Abel Tasman’s ships), and the State of Tasmania (named for the explorer and known for its wines)”. Against this background, the delegate concluded “people knowing of the Opponent’s Trade Mark’s reputation and the way in which it has been promoted to the marketplace are likely, in my consideration, to wonder if there is some connection between the Trade Mark and either the goods bearing the Opponent’s Trade Mark or the Opponent and its operations”.

Apple Inc [2018] ATMO 36 (14 March 2018)

Apple was successful in achieving acceptance of its various applications for trademark registration of APP STORE, namely 3 applications filed on 23 December 2014 for various services in classes 35, 38 and 42, as well as a divisional application filed on 15 May 2015 (with a priority date of 28 May 2011) for various goods in class 9. This priority date was subsequently abandoned.

The delegate found the APP STORE trade mark was not to any extent inherently adapted to distinguish the relevant goods and services. Apple did not challenge this. Hence, the outcome turned on whether the evidence was sufficient to show that, through use, the APP STORE trade mark had become factually distinctive as at the respective priority dates in December 2014 and May 2015 and qualified for registration under s41(3).

Of course, Apple had previously filed an application to register the APP STORE trade mark for a broader range of services, but that application was refused and reported here

The evidence submitted by Apple was several thousand pages and the delegate was satisfied that, as a result of the use of APP STORE since 11 July 2008, this trade mark had become distinctive in fact. This was despite Amazon having also used “Appstore”, for the sake of its ordinary meaning, to describe its software retail and download services.

Unsuccessful opposition by Earl of Sandwich to an application for trademark registration of JOHN MONTAGU (Stylised) filed on 25 November 2014 for cafes in class 43.

Both parties filed evidence and the applicant relied on written submissions.

The Applicant has been providing café services under the JOHN MONTAGU mark since November 2013.

The Opponent owns an earlier Australian trademark registration for MONTAGU dating from 17 September 2014 and covering the same services. Its business is connected with the current and eleventh Earl of Sandwich, a descendent of Lord John Montagu who was the fourth Earl of Sandwich and attributed as being the originator of the term “sandwich” now used to describe a foodstuff comprising various fillings between slices of bread. The opponent operates and franchises a chain of restaurants in the USA, UK and Disneyland Paris under the name EARL OF SANDWICH which sells various sandwiches including one under the name THE FULL MONTAGU.

The s44 ground of opposition failed because the delegate did not consider the applied for JOHN MONTAGU (Stylised) mark to be substantially identical to the opponent’s registered MONTAGU mark. It was not necessary to decide whether these mark were deceptively similar because, assuming they were, the applicant’s evidence supported registration under the prior continuous use provision of s44(4).

The s58 ownership ground failed because, even assuming the opponent had prior user of the MONTAGU mark in Australia, that mark was not substantially identical with the applied for JOHN MONTAGU mark.

The s60 ground failed because the opponent could not establish a relevant Australian reputation in any of its MONTAGU trade marks. In light of this finding, the s43(b) contrary to law ground based on the Australian Consumer Law also failed.

The opponent also relied on the s43 ground alleging that use of the applied for JOHN MONTAGU mark would be likely to deceive or cause confusion due to the connotation arising from the word MONTAGU. However, this ground also failed because the delegate was not satisfied that the relevant consumer would perceive a connotation of the fourth Earl of Sandwich, let alone the eleventh and current Earl of Sandwich or, for that matter, the opponent.

Finally, the s62A bad faith ground also failed. The opponent had written to the applicant about a year after it commenced business and the applicant subsequently filed the application for trademark registration of JOHN MONTAGU. This was done to protect its goodwill and reputation after receiving legal advice and such action could not be characterised as being in bad faith in all the circumstances.

Successful oppositions by Southcorp to applications for trademark registration of two composite marks containing the words RUSH RICH as shown below filed on 7 March 2016 for various alcoholic beverages in class 33

The opponent filed evidence, but the applicant did not. Both parties were represented at the hearing.

The parties have also been involved in trade mark disputes in China.

The opponent relied on use of the following two Chinese Characters in connection with its Penfolds brand of wines exported to China and also offered for sale on Tmall.com (which can also be accessed by Australians)

These are the Chinese Character version of Penfolds. They can be transliterated as Ben Fu which is the Chinese phonetic expression of Penfolds.

The evidence also disclosed the applicant’s marketing of its products using ‘Penfolds Australian Winery’ and other elements copied from the opponent’s website. The applicant’s get up included rendering of the Rush Rich mark in red font on a white background which are the colours used in connection with the Penfolds brand.

The delegate upheld the s62A bad faith ground of opposition. The evidence established a pattern of behaviour by the applicant and/or its associated companies which shifted the onus to the applicant to show that it did not file the relevant trade mark applications in bad faith. However, the applicant did not file any evidence at all.

The delegate concluded “the Applicant is attempting to usurp for itself the ‘Penfolds’ brand’s reputation by leveraging an ambiguity around the same marks it is using in China which include the phrase ‘Rush Rich’ and/or the Chinese characters which would be understood by the significant proportion of Australians bilingual in both English and Mandarin Chinese to indicate ‘Penfolds’.”

Emanuela Elia v Oz Derma Pty Ltd [2018] ATMO 39 (26 March 2018)

Unsuccessful opposition by Elia to an application for trademark registration of OZDERM CLINIC filed on 4 December 2015 for various cosmetic and beauty care related services in class 44. A related opposition decided in February 2018 is reported here

Both parties filed evidence and the opponent relied on written submissions.

The applicant operates two clinics in the Sydney metropolitan area providing medical and cosmetic services under the OZDERM CLINIC brand.

The opponent owns an earlier trademark registration for Ozderm dating from 18 November 2013 for various research and testing services in class 42. This mark has been used since September 2013 in connection with a clinic for in vivo efficacy testing and clinical trials for various cosmetic, dermatological and personal care products.

The s44 ground of opposition failed because the delegate did not regard the applicant’s applied for services to be similar (of the same description) to any of the services covered by the opponent’s registered trade mark.

The s58 ownership ground failed because the delegate did not regard the services provided by the opponent to be the same kind of thing as any of the applicant’s applied for services.

Under the s60 ground, the delegate considered the evidence disclosed a modest reputation acquired by the opponent through use of the Ozderm mark, but in relation to the specialised service of product testing on human subjects and the opponent failed to establish a likelihood of deception or confusion with the applicant’s applied for services.

The opponent also relied on the s42(b) ground and asserted that use of the applied for mark would be contrary to the Australian Consumer Law but, given her failure to satisfy the s60 ground, it naturally followed that she was unable to establish the higher evidentiary burden required under s42(b).

Partly successful opposition by Clarity Software to an application for trademark registration of CLARITY filed on 15 October 2015 for a range of services in classes 35, 41 and 42. This application was accepted under the s44(4) prior continuous use provision.

The opponent owns a prior trademark registration for Clarity dating from 26 June 2000 covering certain goods and services in classes 9, 35 and 42.

Essentially, the opponent successfully relied on s44 to obtain various amendments (the ‘deleted services’) limiting the scope of the specification of the applied for mark because the evidence relied upon by the applicant simply did not support prior continuous use of the CLARITY mark from before 26 June 2000 for all of the claimed services. Further, the applicant could not rely on honest concurrent use to support registration for the deleted services.

Given this outcome, it was not strictly necessary for the delegate to consider the s58 ownership ground, but this was also established for the deleted services. This was not based on the opponent’s prior use of the Clarity mark, but rather it was due to the opponent applying to register this mark prior to the applicant’s first use of the identical mark.

The s60 ground failed because the evidence did not support the opponent having acquired a relevant Australian reputation through use of the Clarity mark prior to filing of the applied for mark.

Successful opposition by Multi Access to trademark registration of WONGLO filed on 9 November 2015 for various medical products and foods in class 5, foods in class 30 and beverages in class 32.

The opponent prevailed under the s44 ground based on its earlier trademark registration for WONG LO KAT dating from 3 December 2010 and covering various foods in class 30 and beverages in classes 32 and 33.

There was no dispute regarding the similarity of the respective goods, so the contentious issue was whether WONGLO was substantially identical with or deceptively similar to WONG LO KAT.

There was no evidence that the term KAT is descriptive or otherwise lacks inherent distinctiveness, so it needed to be regarded as an essential feature and so the respective marks were not substantially identical.

On the deceptive similarity issue, the delegate considered there were phonetic similarities between the respective marks as well as visual similarities whether or not the target audience includes those familiar with Mandarin, Cantonese, or both and appreciate LO KAT may mean OLD LUCKY. Consequently, the respective marks were found to be deceptively similar and registration of WONGLO was refused.

Unsuccessful opposition by the Blackmarket companies to trademark registration of BLACK MARKET DEAL filed on 4 September 2015 for retailing services in class 35.

The opponents are both operated by the same staff and with the same resources based in New Zealand. The New Zealand business commenced in 1999 and involved operating a website which facilitated the sale of wines by wineries and distributors directly to customers. From 2014, the opponents also engaged in retail sales of wines produced by other parties, typically mystery wines where the wine producer is concealed until after purchase. However, the opponents did not send goods or offer their retailing services to Australia. The Australian domain name re-directed to the New Zealand website. Since May 2016, the Australian website displayed an Australian specific welcome page inviting visitors to register in anticipation of wines being sent directly to Australian consumers.

Blackmarket Australia owned two Australian registrations for trade marks containing or consisting of BLACKMARKET covering discount services in class 35 and alcoholic beverages in class 33. These registrations were current at the time of filing the opposition, but were subsequently removed from the Register following successful non-use actions by the applicant and that decision is reported here

The applicant is also engaged in the selling of wines involving special deals where the identity of the producer and the specific wine is not disclosed at the time of offer and the consumer only becomes aware of these details at the time of taking delivery. It commenced its Australian business on 19 March 2013.

The s44 ground of opposition failed because the earlier trademark registrations relied upon by the opponents were removed from the Register as of 27 March 2018. As such, those registrations could not be the basis for a valid objection under s44. The delegate referenced an earlier decision in 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 which discussed and affirmed this approach.

The opponents also argued that use of the applied for mark would be contrary to the Australian Consumer Law, but this s42(b) ground of opposition failed because the delegate was not satisfied the opponents had ever used the BLACKMARKET trade mark in Australia before the relevant date of 4 September 2015 and could not establish any relevant Australian reputation to sustain this ground of opposition.